Many district courts around the country have specialized local rules that govern patent litigation, in order to assist the court and the parties to manage the myriad issues that come up in the vast majority of complex patent cases.  Local patent rules often control the schedule and format for the parties’ infringement and invalidity contentions, claim construction proceedings, etc.  The Northern District of California, where France Telecom and Marvell are embroiled in a patent suit over Marvell’s alleged infringement of a digital coding patent, is one such district that uses local patent rules.  In a ruling handed down this past Friday, U.S. Magistrate Judge Nathaniel Cousins found that it was proper for France Telecom to rely on two ETSI 3G cellular standards in formulating its infringement contentions.  This ruling shows that — with some caveats — it is permissible to use an industry standard as a basis for infringement contentions in districts with local patent rules.

[2013.05.013 (D.E. 79) Granting Motion to Compel in Part]

A brief bit of background on the case: France Telecom originally sued Marvell in June 2012 in the Southern District of New York, and the case was later transferred to N.D. Cal.  France Telecom alleges that Marvell infringes U.S. Patent No. 5,446,747, a patent directed to an error-correction coding method that France Telecom alleges is essential to various 3G standards promulgated by the ETSI 3rd Generation Partnership Project and follow-on groups (3GPP/3GPP2).  Under N.D. Cal. Local Patent Rule 3-1(c), France Telecom was required to disclose its direct infringement contentions, including:

A chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality, including for each limitation that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function.

In its Rule 3-1(c) infringement contentions, France Telecom stated that it was unable to make a direct comparison to Marvell’s accused products, so it based its claim chart on the two 3G telecommunications standards.  Marvell moved to strike France Telecom’s contentions as insufficiently specific under the Local Patent Rules.

The court disagreed and found France Telecom’s infringement disclosures to be sufficiently specific.  Citing the Federal Circuit case of Fujitsu v. Netgear, 620 F.3d 1321 (Fed. Cir. 2010), the court noted that is generally proper to rely on an industry standard to analyze infringement issues (although if the portions of the standard are optional, it may be insufficient to show infringement by a particular defendant).  The court also acknowledged that the Eastern District of Texas, another court with local patent rules, has allowed the use of an industry standard as a basis for infringement contentions.  The court rejected Marvell’s assertion that France Telecom is required to “reverse engineer” Marvell’s products, explaining that infringement contentions do not require such reverse engineering, nor “the disclosure of specific evidence” of infringement.  Rather, the infringement contentions are supposed to be based on the extent of the present knowledge of the plaintiff in how it believes the defendant’s products infringe.

(Judge Cousins did, however, grant the motion in part and order France Telecom to amend other portions of its infringement contentions to provide more specificity — e.g., with respect to indirect infringement and the doctrine of equivalents — but these are not specific to standard-essential patent issues and don’t reflect on his holding regarding the industry standards.)